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Protecting business methods in a changing legal environment

Protecting innovative business methods and services has presented unique challenges for decades, including new post-grant challenge provisions enacted in the America Invents Act and evolving case law after the Supreme Court’s decision in Bilski v. Kappos. Finnegan is at the forefront of important developments in both of these areas. At the Patent Trial and Appeal Board (PTAB), Finnegan filed the first successful petition for post-grant review of a covered business method patent. And at the Supreme Court, Finnegan briefed and argued the Bilski case, prevailing on both questions presented before the Court, including obtaining a ruling that business methods cannot be excluded from patenting per se. 

Sustained experience

For nearly half a century, Finnegan has been involved in the efforts to mold the law to accommodate advances in information processing and business-related innovation. We represented companies in the software area during the 1970s as the U.S. Supreme Court struggled with defining patent protection for software inventions. We then worked with the U.S. Patent and Trademark Office (USPTO) to fashion standards for examining applications in the software area after the Supreme Court’s landmark 1981 decision in Diamond v. Diehr, which defined the appropriate scope of protection for computer-related inventions.

Finnegan has played a role in some of the seminal court cases involving the scope of patent protection. In 1980, we wrote an amicus brief to the Supreme Court in Diamond v. Chakrabarty on the patentability of a living organism. We also drafted the application in In re Lowry, and prosecuted the case through the USPTO. That case established the patentability of claims to a machine-readable data structure in a computer. In the Federal Circuit, we represented one of the parties in AT&T Corp. v. Excel Communications, Inc., which dealt with the patentability of a method of determining telephone charges. We also filed an amicus brief in the Federal Circuit in In re Beauregard, which concerned claims to a computer program embodied in a tangible media, such as a floppy disk. More recently on the issue of patentable subject matter, we filed amicus briefs in the Supreme Court in Mayo v. Prometheus and in the Federal Circuit in ACLU v. Myriad.

Business method patents after Bilski

Finnegan’s involvement in the Bilski case began with an amicus brief for the AIPLA in In re Bilski before the case went en banc at the Federal Circuit, and continued with the filing of an amicus brief for Accenture to the en banc court. The Bilski applicant then turned to us to seek Supreme Court review, and when we succeeded, Finnegan partner Mike Jakes argued the case at the Supreme Court. In its decision, the Court agreed with our arguments that the Federal Circuit’s mandatory machine-or-transformation test for patentable subject matter was too restrictive and that the Patent Act does not exclude business methods from patenting.

Post Bilski, innovations in e-commerce, financial services, and medical methods continue to develop and thrive. Finnegan advises companies on strategies consistent with the Supreme Court’s directives in Bilski and the Mayo v. Prometheus decision. As the lower courts apply the Supreme Court’s rulings, Finnegan has been there, representing several patent owners in cases before the Federal Circuit involving the patent eligibility of business methods and software. For example, we successfully represented Research Corporation Technologies before the Federal Circuit, where the court reversed summary judgment of invalidity of claims directed to methods for half-toning digital images, explaining that only “manifestly abstract” inventions are patent-ineligible.

Finnegan’s interest and experience in business method patents and the issue of patentable subject matter can also be seen from our extensive writing and speaking on the topic. In the last 20 years, our attorneys have authored more than 60 articles on issues related to business method patents, including chapters in BNA’s Electronic and Software Patents Law and Practice. In addition, in the last three years alone the firm has hosted a dozen seminars or webinars on the topic, and our attorneys have presented at conferences organized by legal associations, business organizations, and academic institutions.